How much creativity does copyright require? Thankfully for copyright creators, not much. A dash will do. But in the rare case when that dash is absent, the owner of the work cannot protect it. Express, LLC v. Forever 21, Inc., recently decided in the Central District of California, is the latest exampleof copyright litigation that collapsed because the copyright owner could not show that its works contained even the spark of creativity. The trade dress claim was also dismissed for want of an expert survey.

The Allegations in the Complaint

Express, a clothing retailer sued Forever 21, a competitor, and two of Forever’s suppliers, White Owl Clothing and Steps Apparel, for copyright and trade dress infringement. Express alleged that four styles of defendants’ men’s plaid shorts infringed Express’ four copyrights in plaid designs it had used in its men’s shorts. Express also asserted a trade dress claim alleging that Forever had copied Express’ men’s track jacket.

Express’ Admissions at Deposition

During discovery, Express’ copyright claims unraveled. Express’ fabric designer admitted that he began the design process for each of the four styles, not by creating an original sketch of the plaid to be used, but by examining visual references made by others. The references were pre-existing plaids in existing garments, fabric swatches or photographs. But Express’ designer could not remember any of the pre-existing references he used for each plaid at issue or recall where he obtained the references. The designer also admitted that he did not retain any of the references.

In addition, the designer testified that, after the pre-existing plaids were scanned into a computer, he directed the computer operator to make changes and additions to the plaids. But the designer could not remember or identify any of the changes that were made. He only recalled that he had each plaid “colored up.”

The Fabric Designs Are Derivative Works

Defendants, focusing on Express’ inability to identify anything it might have added to the pre-existing plaids, moved for summary judgment. Forever, White Owl and Steps argued that Express’ four fabric designs were derivative works. That is because Express created them from pre-existing visual references.

Section 101 of the Copyright Act provides that the copyright in a “derivative work extends only to the material contributed by the author of such, as distinguished from the preexisting material employed in the work and does not imply any exclusive right in the preexisting material.”

Defendants argued that Express’ 4 fabric designs were unprotectible because Express could not identify its contributions to the derivative works and therefore could not show even a touch of creativity.

Express, unable to seriously dispute the testimony of its designer, relied on its copyright registrations. Express argued they were entitled to presumptive effect under 17 U.S.C. §410(c) because they were made “within five years of the first publication of the work.”

Summary Judgment Granted on Copyright Infringement Claims

The court granted White Owl’s motion, stating “Express has no proof whatsoever that Express made any particular changes to the source material, let alone changes that are sufficiently creative to warrant copyright protection.” The court further stated that simply because Express “colored up” the preexisting designs “does nothing to cure the utter lack of evidence upon which a juror could reasonably conclude that any of the Plaids [Express’ 4 fabric designs] contain content original to Express.”

The court added that, even if Express could have recalled the particular color substitutions it may have made to the plaids, “mere changes in color are not subject to copyright protection,” citing to 37 C.F.R. § 202.1, which states that “mere variations of color” are not copyrightable.

The court correctly refused to give presumptive effect to Express’ copyright registrations because they did not reveal that the works sought to be registered were derivative based on pre-existing designs. Express also failed to amend the registrations during litigation.

The court stated it “fails to see why it should give presumptive effect to a copyright registration that contradicts the sworn testimony of the purported designer of the copyrighted work.” As the court noted, Express filed them without speaking with its designer.

Judge Wright added that, even if the registrations were entitled to presumptive effect, “defendants have rebutted that presumption by producing” the testimony of Express’ designer establishing that the designs were not copyrightable.

The creativity threshold for copyright is low but here creativity was non-existent. With no creativity there was no copyright.

The Trade Dress Claim Is Also Dismissed

Express’ trade dress claim fared no better. Section §43 (a) of the Lanham Act requires plaintiff to demonstrate that the trade dress is distinctive, which, in turn, requires a showing of secondary meaning. That meaning arises “‘when the purchasing public associates the dress with a particular source.”

The court noted that secondary meaning may be established by direct or circumstantial evidence. Direct evidence is usually based on an expert survey. But Express chose not to conduct one.

Instead it relied on circumstantial evidence which focuses on “exclusivity, manner and length of use, amount and manner of advertising, amount of sales, the number of customers, and plaintiff’s established place in the market.”

Circumstantial Evidence of Secondary Meaning Lacking

The court found that “Express fares poorly in each category.” Express had sold the track jacket for only 5 months, made no effort to individually advertise or promote it and had sales of less than 17,000 jackets nationwide, an amount substantially lower than the numbers sold of many other Express garments. “Spread over Express’ 500 plus retail locations, Express sold just six or seven Express jackets per month during the time the jacket was offered for sale.”

Although the court noted that Forever “copied the exact appearance” of the jacket, “copying alone is far from sufficient to avoid summary judgment.” The court stated that, if it accepted Express’ evidence of secondary meaning “as sufficient, it would have to conclude in future cases that virtually every garment Express sells has secondary meaning.”

Some Take-Aways

The take-aways from this case include the following. When creating a derivative work by drawing inspiration from a pre-existing visual reference, it’s best to keep a copy of that reference so you may easily establish the creative additions you made. Here, Express’ copyright claims were doomed once it admitted it could neither identify the original plaids nor a single creative alteration it made to them. Further, in a trade dress case, copying alone is not enough. An expert survey, despite the cost, is still the best direct evidence a plaintiff may offer to establish secondary meaning.